Callistonian.net

A side-by-side comparison is not the proper test in determining the similarity of the marks. It may be counterintuitive for many people, but I think that NYC & Company’s registration could be refused, even if the GreeNYC logo looks nothing like Apple Inc.’s logo. Let’s look at this case found at TTABVUE, the Trademark Trial and Appeal Board Inquiry System.

Honda Motor Co., Ltd. (opposer) v. Dakota Motorcycles USA Inc. (applicant)

http://ttabvue.uspto.gov/ttabvue/ttabvue-91162109-OPP-22.pdf

Honda Motor has opposed registration of Dakota Motorcycles’s mark on the ground that their logo is too similar in appearance and thus likely to cause confusion. Let me quote a few passages:

“The test, under the first du Pont factor, is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks.” (page 7)

“Although a side-by-side comparison is not the proper test in determining the similarity of the marks, we set them forth below for ease of reference and discussion. […] In terms of appearance, we find that the marks obviously are dissimilar. […] However, we find that there is a high degree of similarity between the design elements of the respective marks. […] Although the respective Viking figures face different ways, and although the Viking in applicant’s mark clearly is male while the Viking in opposer’s mark appears to be female, those points of dissimilarity are outweighed, in our analysis, by the fact that both figures essentially would be perceived as being Vikings. […] In sum, we find that although the marks are not identical in terms of appearance, they are quite similar in appearance when viewed in their entireties.” (p. 8-9)

“Considering and balancing all of the evidence of record as it pertains to the relevant du Pont factors, and for the reasons discussed above, we conclude that there is a likelihood of confusion between applicant’s mark as applied to motorcycles and opposer’s registered design mark as applied to motorcycles. The fact that the goods are likely to be purchased with a degree of care does not suffice to overcome the likelihood of confusion arising from the similarity of the marks, the identical nature of the goods, trade channels and purchasers, and the strength of opposer’s mark.” (p. 10-11)

“In summary, we find that opposer has established its standing to oppose and its Section 2(d) ground of opposition. Decision: The opposition is sustained.” (p. 11)

Of course the marks are both applied to motorcycles, Apple’s case is different because NYC & Company is not selling computers, nor phones, music players, etc. But certain of the goods identified in NYC & Company’s application are identical to the goods identified in Apple’s registration 1,401,237 from July 15,1986. Class 21: mugs, dishes, drinking glasses, beer steins and wine glass. (Apple opposition, page 4)

http://www.wired.com/images/pdf/apple_opposition.pdf

Apple is also claiming that registration of Applicant’s marks is likely to cause dilution of the distinctiveness of Apple’s marks. This is important, as Apple is one of the most valuable brands in the world. In its Notice of Opposition, the company has gone to great length to establish that. Why? Well, according to the International Trademark Association:

“In an infringement action, famous marks are often accorded a broader scope of protection, which means that infringement may be easier to establish. Also, in many jurisdictions famous marks are protected against even non-competing, unrelated uses without the need to prove likelihood of confusion, on the basis that such use dilutes the distinctiveness of the famous mark.”

http://www.inta.org/index.php?option=com_content&task=view&id=1721

According to cyber.law.harvard.edu: “In addition to bringing an action for infringement, owners of trademarks can also bring an action for trademark dilution under either federal or state law. Under federal law, a dilution claim can be brought only if the mark is “famous.”. […] Once the prerequisites for a dilution claim are satisfied, the owner of a mark can bring an action against any use of that mark that dilutes the distinctive quality of that mark, either through “blurring” or “tarnishment” of that mark; unlike an infringement claim, likelihood of confusion is not necessary. Blurring occurs when the power of the mark is weakened through its identification with dissimilar goods. For example, Kodak brand bicycles or Xerox brand cigarettes. Although neither example is likely to cause confusion among consumers, each dilutes the distinctive quality of the mark. Tarnishment occurs when the mark is cast in an unflattering light, typically through its association with inferior or unseemly products or services. So, for example, in a recent case, ToysRUs successfully brought a tarnishment claim against adultsrus.com, a pornographic web-site. Toys “R” Us v. Akkaoui, 40 U.S.P.Q.2d (BNA) 1836 (N.D. Cal. Oct. 29, 1996).”

http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm#8

A broader scope of protection? No need to prove likelihood of confusion? I have good reasons to think that opposition will be sustained.

And the fact it’s a green campaign and a non-profit organisation trying to do good is pretty much irrelevant. Besides, the New York city council is protecting its trademarks too. The following article is from last November, this is the exact same thing.

http://www.news.com.au/story/0,23599,22736653-2,00.html

“New York has taken the first step towards dragging Brisbane City Council through the courts for ripping off its “I love NY” logo. […] The city [Brisbane] argues the logo is being used to inspire those in Brisbane to go green, and not as a tourism promotion. […] But New York argues it is irrelevant how Brisbane uses the logo because it is a clear breach of its trademark.”

Oh my dear God, New York City is, like, teh EVIIIIL!!!11

I kid, I kid… :D